Israel Patent Office Awards Costs of 281,651 Shekels for Unsuccessful Opposition

July 14, 2014

costs

Rafael Advanced Weapons Systems LTD filed two patent applications, IL 149934 and IL 180478 “Airborne Reconnaissance System”, which were opposed by Elbit Electrooptical ELOP LTD.

IL 149934 was filed on 30 May 2002, and on allowance, published for opposition purposes in May 2007. Elbit filed an opposition, as did Elta – Israel Aircraft Industries.

Because of a divisional application,  IL 180478, the opposition was frozen until the second case was allowed and published for opposition purposes on in November 2009.  Both opposers opposed both applications. Since the cases were identical, the oppositions were combined.  The two cases were heard together, although they weren’t combined in a single proceeding.

When the oppositions were eventually dropped, the applicant applied for 711,263.79 Shekels in costs, providing an itemized table of charges for each action.

After reviewing the table and noting a mistake wherein 54,330.25 Shekels was listed instead of 543.3 Shekels, the opposer suggested that a total of 25,000 Shekels would be more appropriate.

In her ruling, the deputy commissioner ruled that for freezing the first opposition until the divisional application published, no costs were appropriate. On the other hand, she considered the full 24,180.73 Shekels charged for the second period, after the divisional application was allowed as being fairly charged.

She also allowed 100,470.58 Shekels for filing corrected statements of case, 150,000 Shekels as reasonable for the submission of evidence and 7000 Shekels for the charges for requesting costs. The total costs allowed were thus  281,651 Shekels, to be paid within 30 days, or interest would be accrued.


When an Israel Patent Lapses Due to Lack of Funds

July 10, 2014

resuscitate

In an appeal to restore lapsed patent number 177522 to Yad Conena LTD., the director Shmuel Savyon claimed that the patent had lapsed due to lack of financial resources. this wasn’t the first time that the patent had lapsed, but on a previous occasion, it was restored after then Deputy Commissioner Noah Shalev Smylovich was convinced that the patent had become abandoned unintentionally.

Section 60 of the Israel Patent Law allows a lapsed patent to be reinstated if the patent lapsed in reasonable circumstances against the patentee’s wishes, and if, on learning that it had become abandoned, the patentee takes immediate steps to rectify the situation.

Deputy Commissioner Jacqueline Bracha considered that in this case, the patentee was aware that the patent had lapsed and had made a conscious decision to allow the asset to lapse due to lack of funds. The patentee didn’t suddenly learn that the patent had lapsed, but rather was aware of the situation. When circumstances changed, he tried to revive the case. This is beyond the scope of Section 60.

COMMENT

I think the Deputy Commissioner is correct in her interpretation of the Law. However, I note that other jurisdictions are more flexible, and though expensive, it is sometimes possible to revive abandoned patents under such circumstances elsewhere. Thankfully most of my clients are in good financial shape, but I have a couple of cases in Europe and the US where the applicants have ran out of funds but the situation has improved. In general, I do whatever I can to help such clients, but only after receipt of anticipated costs up front.

 


What Happens When One Party of a Jointly Owned Application is Not Interested in Continuing with Examination?

July 7, 2014

Three parties: CNRS, University of Pierre and Marie Curie, and the Centre Etudes et de Valorisation des Algues, Ceva filed a national phase of FR2011/051384 into Israel as IL 224677.

On three separate occasions, the Centre Etudes et de Valorisation des Algues, Ceva indicated a lack of interest in the European and Israeli applications being examined. In the circumstances, the other two parties applied to continue prosecuting under Section 25, with their request supported by a statement from Ludovic Hamon the VP of CNRS.

RULING

In cases of multiple owners, Section 25 allows for a jointly owned patent application to be prosecuted in accordance with the desires of only some of the parties, but the Commissioner will only abandon an application or patent at the request of all of the parties.

Section 25 has not been clarified by the case law, and the accompanying explanation to the Law from prior to its legislation, does not relate to this section.

The Deputy Commissioner suggests that the purpose of the Law is so that a pending application may be moved forwards without agreement of all parties, so long as they are all kept in the picture.

In this case, despite the disagreement on ownership, two of the applicants are willing to the prosecution of the application without the involvement of the third party.

Since the Commissioner cannot see how the third party can lose from this, she ruled that examination should continue, with the third party being informed of developments.

Whereas all applicants may submit for an application to be abandoned, there is apparently no mechanism for one applicant of many to disengage himself from the examination process. Consequently, the Deputy Commissioner suggests that she should act as per the Law of Chattels. However, without clear indication from the third party that they are relinquishing all rights in the application she is unwilling to do more than simply to follow advice of the other parties.

Ruling, Jacqueline Bracha, 30 June 2014

COMMENT

This type of case could get very messy. Any of the joint owners can license the patent if allowed. Where parties are jointly owned, one should try to have clear contractual obligations in place. In this sort of case, ideally the interested parties should try to buy out the rights of the disinterested party.


Click Switch Refresh – what are considered reasonable costs?

July 7, 2014

Up_in_Smoke

British American Tobacco (Brands) LTD. or BAT, filed Israel trademark application no. 232537 for the slogan “Click, Switch, Refresh”. The trademark was opposed by Phillip Morris Products, and on allowance, costs of 98,966 Shekels were awarded against Phillip Morris who challenged the costs as exorbitant.

The applicant considered the costs as actually incurred, real lawyer’s fees, as evidenced by invoices from David Colb., and also argued that since the opposer had acted in poor faith and was an international player, there were grounds to award costs as an example and warning.

Phillip Morris considered that the costs were out of all proportion to the amount of work done, the nature of the case and when the opposition was withdrawn. Furthermore, the opposer argued that some of the costs were not sufficiently detailed and should therefore be refused.

 

RULING

The Commissioner is authorized to claim costs under Section 69 of the Tradaemrk Ordinance. As per Supreme Court Ruling 891/05 Bagatz Tnuva, the winning party is entitled to actual costs provided these are reasonable, taking into account the nature of the case, the amount of work, the stage reached, equitable behaviour of the parties and the like.

In this case, there is no difference between pro forma invoices and tax receipts where the pro forma invoices are expected to be settled. The attorney is entitled to set his fees. The opposer failed to point out specific reasons why costs were considered exorbitant, merely complaining about the overall charges.

On the other hand, an extension fee taken was allowed at the official patent office rate of the patent office, and not at $150 as charged. What appeared to be two charges for the same train journey between Rechovot and the patent office was allowed only once. The witness’ expenses of $400 for flight, $71.53 for food and drink and 2655 Shekels for two nights at the Tel Aviv Hilton were not allowed as no evidence was given, beyond general travel agent fees.

 

COMMENTS

Reading between the lines, it appears that the attorneys-of-record, who are known for their hospitality, put up their client and witness at the Colb Farm in Rehovot, and charged the witness’ train ticket and a typical two night hotel package in Tel Aviv to the losing side.

Adv. Kling correctly refused the hotel fee as not a reasonable incidental expense. It seems that the correct procedure is that Colb should either accommodate their witness in a bona fide hotel and keep the receipts, or, could perhaps apply for recognition of their hostelry services as a Ben & Breakfast or boutique hotel, and issue invoices. If my understanding is correct, the Commissioner is correct not to allow them to claim Tel Aviv hotel expenses when putting up witnesses themselves.


Intellectual Property at the Workplace: Theoretical and Comparative Perspectives, by Dr Shlomit Yanisky-Ravid, the Book Launch

July 4, 2014

shlomit

This is a report of the  book launch of Dr Shlomit Yanisky-Ravid’s opus “Intellectual Property at the Workplace: Theoretical and Comparative Perspectives, by Dr Shlomit Yanitzky-Ravid”. קניין רוחני בעסודה: תיאוריה, מעשה ומשפט השווה – ד”ר שולמית יניצקי-רביד. I have a peer-reviewed book review waiting publication, and can only blog that once it has publishes, at least on-line, so this article focuses on the event, not the book.

THE LUNCH LAUNCH

Dr Miriam Biton once accused me of only blogging about refreshments at conferences. This is not true. I try to cover events for IP enthusiasts who forgot to attend, and do try to cover the less substantive aspects of events as well. Nevertheless, I had worked through lunch and the reception started at 4:30, so I was grateful that it included savoury sandwiches. They weren’t very exciting or tasty, but were filling, and I didn’t get home until gone 10 PM, so it was appreciated. Most were short on filling, but one with avocado wasn’t, and I had changed into a white shirt for the occasion. Ah well.

There were perhaps 30 people at the reception, and about 100 at the event. This number included students. In an email exchange with me Dr Shlomit Yanisky-Ravid claimed 80 registered participants, so perhaps we should accept this figure without quibbling.

WORDS OF WELCOME

The evening opened with words of welcome from the Dean of the Law faculty, Professor Amichai Cohen, who noted how active Dr Shlomit Yanisky-Ravid is very busy in a wide range of activities including organizing events, student trips abroad, lecturing, publishing, directing the Center for Comparative Law and other work for the ONO Academic College.

For some reason, the compere, Dr Rivi Cohen, who otherwise did a fine job, introduced the Commissioner of Patents and Trademarks, as Adv. Assa Kling. I suppose a law academic considers that being an attorney-at-law is a major achievement, but there are 50,000 of them in Israel, and only one Commissioner of Patents at a time. The job description of Commissioner of Patents is approximately on a par with being a District Court Judge. As the commissioner had recently published a ruling relating to Service Inventions that had related extensively to the book, but ruled that even the author admitted that the current state of the Law was not in accordance with her views, I was eager to hear what he had to say. Diplomatically, he spoke about the collaboration between the Patent Office and WIPO that Shlomit was involved with, and didn’t relate much to the book other than noting that it was in the Patent Office library. He also noted that there was an unprecedented 8 cases before the committee for employee compensation, so the book was timely and important.

Judge Elisheva Barak Ussoskin, the Emeritus Labour Court Deputy President, read a speech that fairly summed up the book. She then apologized for not staying, but her grandchildren had ballet, which she felt was more important. For a words of praise presentation, this was pardonable, but subsequent speakers in the first panel, made up of academics and colleagues of Shlomit from ONO, also spoke and then walked out.

THE ACADEMIC PANEL

Former Accountant General, Professor Yaron Zlikha, raised some interested points concerning non-patentable inventions by civil servants, and argued that giving a large percentage royalty to civil servants who were inventors of patents discriminated against their colleagues who may have made lucrative innovations for the government that are not patentable. He gave, as an example, an action he had initiated that had generated two billion shekels for the communal pot, arguing that giving inventors 35% royalties and not giving him even 3.5 parts per million, seemed a little unfair. Professor Shlomo Noy, Head of the Health Services Department at ONO then spoke.  He countered some of Dr Zlikha’s comments. Both senior ONO lecturers spoke and walked out. Not taking questions from the floor is one thing, but not staying for the break to take questions individually, or to hear other panelists comments, seemed to me to be bad manners. If the moderator had forced them to react to each other’s comments, a meaningful debate might have ensued.  (I felt that the moderator, who mentioned Shlomit’s important chapter on gender, was mostly qualified by virtue of being a female academic). 

Professor Orly Lovel gave a perspective based on corporate law. She had a lot to say and limited time, so gabbled somewhat. Her last point was valid, though hardly original. She noted that the labour Laws in California which allowed workers to change companies and take knowledge with them had generated Silicon Valley, whereas the Massachusetts State Law had prevented a similar phenomenon from growing up around Boston, despite the top universities there. I Accept that this is good evidence that pro-worker legislation is good for the technological progress. However,  I am not sure that it is good for companies or inventors. In other words, the question of how this redistributes wealth was not addressed.

THE PROFESSIONAL PANEL

After the break, there was a panel chaired by Advocate and Notary Calia Klein, the head of the labour law group at Pearl Cohen. Having experienced first hand of how her firm treats employees, it was interesting to discover that they have an Employment Law group, and are thus presumably aware that there are laws in this area. There  were some solid but not particularly inspiring comments by Adv. Yossi Markovitch and by Adv. David Gilat. David noted that the employer-employee relationship is part of Patent Law, not Labour Law and felt that this was appropriate.

Adv. Eran Bareket made some interesting and, for me, thought provoking comments about forum shopping regarding service inventions, noting that the book hadn’t related to this issue. He pointed out that one can file suit in the labour courts, the District Court, with the Commissioner of Patents in opposing a patent as being the true inventor or owner, or with the committee for compensation for service inventions. He gave examples of where cases had gone to each forum and considered the state of affairs problematic, as the rulings would perhaps be influenced more by the forum, than by the issues.

Mr Amir Raveh, an inventor and investor in start-ups acknowledged no legal training and feigned not to have understood the terminology used by the other panelists. He stated that whereas a few years ago,start-ups were expected to have patent applications, nowadays, this is no longer the case and the issue when selling companies is human resources. He did not seem able to explain how one can sell human resources though. Employees can move companies, and non-compete clauses are rarely enforceable. He seemed to be involved in the currently trendy smartphone App field. I wonder how one can prevent competitors from under-cutting without patents?

The evening concluded with Dr Yanisky-Ravid thanking just about everyone, receiving a bouquet of flowers from a student groupie, and lots of photos of her posing with speakers and family members who had turned up in force to show their support.


Opposition to IL 138831 “Gaze Actuated Information System”

July 3, 2014

heads up display

Rafael LTD. filed Israel Patent Application Number 138831 for a “Gaze Actuated Information System” in 2000 which was allowed in July 2007 and Elbit filed an opposition within the prescribed three months.

Asaf Ashkenazi, a director and VP MOP of Elbit and Mr Naftali Maimon, a marketing development worker at Rafael filed sworn statements. Mr Asaf Ashkenazi attempted to file an additional statement in response to that of Mr Naftali Maimon, but Adjudicator of  IP, Ms Yaara Shoshani Caspi threw out statements regarding the lack of utility and lack of industrial applicability that were considered as beyond the original Statement of Case.

In 2010, then Deputy Commissioner Noah Shalev-Smylovits heard the witnesses and their cross-examinations. The Commissioner Assa Kling decided to rule on the evidence submitted and the transcripts of the hearing.

Apparently the system provides audible warnings to the pilot, follows the pilot’s eye movements and simplifies the visual display. The system results in lighter helmets and simpler heads-up displays than those previously known.

The patent was sought on tracking the pilot’s eyes rather than in directing the pilot’s gaze. The claim set included three independent claims for the system and method and 15 dependent ones.

Claims 1 and 14 are as follows:

1. A method for providing a pilot with information associated with at least one region of a field of view visible to the pilot from within a cockpit without requiring a visual display, the method comprising steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot by:

(a)   employing a helmet-mounted system to derive direction information related to a relative eye gaze direction for at least one eye of the pilot relative to a helmet worn by the pilot,

(b)   deriving position information related to a position of said helmet within a cockpit, and

(c)    processing said direction information and said position information to derive said eye gaze direction relative to a frame of reference associate with said cockpit;

(ii)               determining a reference direction relative to said given frame of reference;

(iii)             comparing said eye gaze direction with said reference direction; and

(iv)             if said eye gaze direction and said reference direction are equal to within a given degree of accuracy, generating audio output audible to the pilot and indicative of information associated with said reference direction.

 

14. A method for providing to a pilot confirmation that a weapon system is locked-on to a visible target without use of a visual display, the method comprising the steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot;

(ii)               determining a target direction representing the direction relative to said given frame of reference from the weapon system to the target to which the weapon system is locked on;

(iii)             comparing said eye gaze direction with said target direction; and

(iv)             if said eye gaze direction and said target direction are equal to within a given degree of accuracy, generating a predefined audible signal to confirm that the weapon system is locked-on to a target at which the pilot is currently gazing.

Elbit claimed lack of novelty / inventive step and opposed the patent under Sections 4 and 5 of the Israel Patent Law. They cited the following prior art:

[1]U.S. Patent No. 5,583,795  “Apparatus for measuring eye gaze and fixation duration, and method therefor”.

[2] U.S. Patent No. 4,196,474  “Information Display for air traffic Control”.

[3] U.S. Patent No. 4,935,885 “Method and apparatus for determining weight and center of gravity of a vehicle“.

[4] U.S. Patent No. 5,602,543 “Detection system for use in an aircraft”.

[5] U.S. Patent No. 5,978,715 “Apparatus and method for aircraft display and control”.

[6] U.S. Patent No. 5,647,016 “Man-machine interface in aerospace craft that produces a localized sound in response to the direction of a target relative to the facial direction of a crew “.

[7] U.S. Patent No. 3,617,015 מיום 2.11.1971, שכותרתו: “Head-coupled missile-aiming device”.

[8] U.S. Patent No. 5,790,085 “Portable interactive heads-up weapons terminal”.

[9] U.S. Patent No. 5,296,854 “Helicopter virtual image display system incorporating structural outlines”.

[10] U.S. Patent No. 5,931,874 “Universal electrical interface between an aircraft and an associated store providing an n-screen command menu”.

[11] U.S. Patent No. 4,288,049  “Remote targeting system for guided missiles”.

[12] U.S. Patent No. 6,455,828 “Method for remote-controlled combat of near-surface targets”.

[13] U.S. Patent No. 4,449,787  “Night vision imaging system adapted for helmet mounting”.

[14] U.S. Patent No. 4,287,410  “Double purkinje eye tracker”.

[15] U.S. Patent No. 5,726,671  “Helmet/head mounted projector system”.

[16] U.S. Patent No. 4,852,988  “Visor and camera providing a parallax-free field-of-view image for a head-mounted eye movement measuring  system”.

[17] U.S. Patent No. 4,634,348 “Head and/or eye tracked optically blended display system”.

[18] U.S. Patent No. 4,028,725  “High resolution vision system”.

[19] U.S. Patent No. 4,034,401 “observer identification of a target  or other point of interest in a viewing field”.

[20] : “Rash et al, Design issues for Helmet-Mounted Display Systems for Rotary-Wing Aviation, USAARL Report No. 98-32 Fort Rucker, AL: U.S. Army Aerodynamical Research Laboratory, July, 1998″.

[21] Kopp, Helmet Mounted Sights & Displays, Air Power International, Vol. 3 No.1, July 1998, pp. 54-57.

[22] “Wenzel and Foster, Virtual Reality: Principles and Applications, Piscataway, NJ: The Institute of Electrical and Electronics Engineers, 1993.

[23] “Begault et al, Augmented TCAS Advisories Using a 3-D Audio Guidance System, Proceedings of the Ninth International Symposium on Aviation Psychology the Ohio State University, Columbus Ohio, 1997.”

The claims for lack of inventive step were based on single publications or their combination with any one of several others. In other words, Elbit was claiming lack of inventive step n the basis of 1 or 2 publications, but Rafael would have to relate to various combinations and permutations to overcome the objection.

Ruling

In oppositions, the onus is on the patentee to prove patentability.

The issues raised included whether tracking a head position and tracking eye movement were identical, and whether improvements could be considered engineering improvements or inventive ones. The main citations were examined in length. Eventually claim 1 was upheld, claim 14 and its dependencies were rejected, and applicant was ordered to correct a typo in claim 6 which related to 50° instead of 5°.

 


Public Interest as Grounds for Accelerated Examination in Israel

June 29, 2014

Eruv

In Israel, patent applications are provisionally categorized into technology areas by the Israel Patent Office on receipt. Applications are then examined in turn by the examiners assigned to the specific technology area.

There are various ways to have an Application examined out-of-turn, by requesting accelerated examination with due cause, if the application is environmentally friendly (green classification), if the applicant is old or ill, or by using the PPH mechanism where there is a corresponding application abroad that has already been examined.

Section 19a(a)5 provides public interest as grounds for accelerating patent examination in Israel. In a ruling concerning Application 216870 Cimas LTD, the patent office ruled that examining in turn was essentially in the public interest, and that to examine something out of turn, requires extraordinary justification.

IL 231173 is titled “A Halachic and technological Eruv”, and accelerated examination was requested on the grounds that it contributed to the quality of life of the Halachically Observant population in Israel.

The Commissioner of Patents, Assa Kling refused the request, since he did not think that this was what the legislature intended when they allowed Public Interest as grounds for Accelerated Examination. He went on to rule that “Public Interest” implies a specific public interest, and this wasn’t shown here. The application is queued for regular examination.

COMMENTS

Jewish Law prohibits Jews from carrying in the public domain on Shabbat (the Sabbath).  An Eruv is a Halachic device developed by the Rabbis for reclassifying public domain as communal domain, thereby allowing carrying therein. Essentially, an area is enclosed by a symbolic boundary, often comprising poles connected by string and this makes it semi-private or communal.

Approx. 25% of the Knesset is Shabbat Observant and this is reflected by the percentage of observant members of the Israeli public. Carrying on Shabbat affects this sector of the population once a week. An Eruv makes a significant difference to the quality fo life of this significant minority of the population. Unlike a lot of religious initiatives, developments and legislation that adversely affects the quality of life of non-Jews and secularists, it is difficult to see how this type of development can adversely affect anyone, at least not in Israel. (In London, there were assimilated Jews who complained that the Eruv made them feel that they lived in a ghetto. Possibly this argument holds true abroad, but Israel is a Jewish state and anyone having a problem with religious neighbors is simply xenophobic and anti-Semitic).

I find it difficult to imagine that over-riding public interest should be limited to things that affect a higher percentage of the population than 25%, more of the time than one full day a week.  It could be that applicant,  Shira Attia, who appears to be unrepresented, failed to make her case properly. Nevertheless, despite whether the Commissioner himself has a problem with carrying on Shabbat, he should be aware that a lot of Israelis do.


Secondary Use Claims – Some Thoughts…

June 27, 2014

second use

Yesterday I attended a meeting of the Association of Israel Patent Attorneys in ZOA  House, Tel Aviv. The invitation and program were blogged here.

The topic under discussion was Secondary Use Claims. Unfortunately, I arrived late and missed the first talk by Adv. Yair Ziv, but caught most of Adv. David Gilat’s presentation, that of Dr Ron Tomer, and that of Ena Pugatsch.

The event was well-organized and well attended. From the remains of the refreshments by the time I arrived, they seemed the usual ZOA fayre. Kudos to the committee headed by Ex-Commissioner Dr Noam, for organizing the event. There were 85 participants in the meeting. This is impressive for a highly specialized topic at an event open to a small organization (noting with approval however, that there were both lawyers and in-house patent coordinators present that are not patent attorneys and thus not members, and also trainees).

Adv. David Gilat posited that drug patents were necessary to compensate the drug developers for their investment, and that secondary uses were also the result of research.  Dr Ron Tomer (confusingly called Dr Yaron Tomer in the original invitation to the event) expertly and clearly countered all of Davidi’s positions, and demonstrated that the pharma industry were creatively filing secondary uses that lacked inventive step and were obvious. He gave various examples. Firstly, he referred to sildenafil citrate, originally developed for treating angina and now used almost exclusively as a treatment for erectile disfunction, as a hard problem. (I thought it was a flaccid problem and a hard solution, but I digress). He went on to argue that an oncological drug for one type of cancer may fairly obviously be tried for another type of cancer since the underlying effects of the drug would treat both mutant cells the same way.  He noted that patents were not awarded for research but for inventions. He claimed that there was nothing new in the drug, despite the new use. He gave convincing examples of ever-greening, and also argued that if it is surprisingly found that a drug treatment for gastro-reflux also kills bacteria in the stomach, then the patient using it takes the same drug for the same purpose that he took it for originally. Since the drug is public domain he could take the generic drug, but to kill the bacteria, he’d have to take the patented drug for a couple of weeks and then move back to the generic. similarly, someone taking a generic statin for cholesterol, on being diagnosed as having genetic cholesterol, would have to switch to the patented version offering protection for this ‘secondary use.’ The talk was intelligent and entertaining, and it was a valuable demonstration of the ubsurd results of secondary use patents.

Ena Pugatsch gave an example of a secondary use claim for a mechanical device that issued in Israel and was upheld by the courts. The device in question was a blackboard that could be used as a screen for showing projected images, where the device and method of manufacture were known but the secondary use wasn’t, and the court upheld the patent. Comparing to European case-law and to US law, she felt that the ruling was ‘problematic’ (a nice way of saying that she considered that the court had got it wrong).

When the floor was opened for questions Mr Zebulun Tomer (Ron’s father and the director of Unipharm) took the opportunity, as he has done on other occasions, to give a little impassioned speech, rather than a question. He made some noises about the results of lobbying and argued that Section 7 prohibits therapeutic treatment of the person and that no-one can convince him that a secondary use is anything other than a method of treatment of the person. Instead of merely pointing out that the issue wasn’t convincing him, but of convincing neutral judge, Adv. David Gilat agreed with him, but said that this was precisely what the Use Claim (Swiss type claims) were for – that is, to allow patents for pharmaceutical methods of treatment despite the prohibition for patents for methods of therapeutic treatment, and this was because of the costs incurred in research and development.

COMMENTS

David Gilat spoke well as would be expected from an experienced litigator. Dr Tomer’s response was also very clear and well constructed. Ena Pugatsch is not an orator, nor is Hebrew her first language (or, I expect, her second language). Nevertheless, her talk, though not the most fluent, was the most thought provoking. All three speakers had far too much content per slide, but none are lecturers. Designing good slides is an art.

David and Ron each presented their opposing positions. As Gilat Bareket represents drug development companies and the Tomer family own Unipharm which manufactures generic drugs, their views were hardly unexpected. I suspect that those in the audience actively involved in prosecuting or litigating pharmaceuticals have equally strong positions based on their source of income. (Richard Luthi, another leading litigator who represents pharma, once told me that under the former Commissioner Dr Noam, the pharmaceutical development industry didn’t have a chance. Whether Dr Naom was biased, whether Unipharm had better arguments, or whether Adi Levit is simply a better litigator, is open to discussion).

The percentage of my income coming from work on pharmaceutical patents is very small. I’ve been involved with both local and foreign clients on both sides of the fence. I tend to find the generic companies’ arguments more persuasive, but can’t tell if this is an inherent bias or whether their arguments are actually better. It is also possible that drugs that are opposed or challenged in cancellation procedures are ones that generally should not have issued, and the both the drug development industries and their litigators have an uphill battle. What is clear, is that Unipharm have had some impressive victories in recent years against Mercke, Smithkline Glaxco, Lunbeck, etc.

Ena’s talk got me thinking. I believe that the original Section 7 law against methods of therapeutic treatment is a historic artefact designed to protect doctors from being sued and represents a moral position that despite obvious utility, novelty and inventive-step, such subject matter would not be patentable. It is a remnant from a period predating the modern pharmaceutical industry. David is correct however. Without effective patent protection, drug development companies would not invest the significant sums required to research and bring a new drug to market. The long approval period also justifies patent term extensions. This development is indeed the result of lobbying, but is, nevertheless, justified. What may not have been justified, is to apply the extensions on cases that were already filed, granting the pharma industry a massive handout that perhaps resulted in them NOT investing in developing new drugs.

Drug developing companies can fairly be accused of ever-greening, and their tactics in filing for secondary uses are commercially driven. However, despite the Special 301 Reports, the generic drug industry are not Robin Hood like outlaws. It is there right to challenge the validity of patents, and some applications are allowed that shouldn’t be. Nevertheless, I suspect that sometimes oppositions are filed for commercial rather than solid legal reasons.

The Swiss Claim (use claim) format is a legal work-around the method of therapeutic treatment clause. Use claims are acceptable in European and Israeli law and are essentially method claims. They do not exist in the US, however in the US one can file methods for therapeutic treatment. What one cannot do, is enforce them against the doctor or surgeon.

After TRIPS, it is clear that one cannot exclude drugs from patent protection. One can still have a principle against patenting methods of treatment. However, countries have to allow patent protection for drugs.

As David Gilat reminded us, patent term extensions were indeed allowed as a package with and justified by a bone thrown to the generic industry – the so-called TEVA amendment, allowing the generic companies to experiment and obtain marketing approval, but not to stock-pile generic patents prior to the patent terminating.  However, one right does not balance the other. Mr Zebulun Tomer is correct that the current balance is the result of lobbying. There were lobbyists on both sides. The ‘one size fits all’ patent law does fail for pharmaceutical patents if such patents have, in the past, been allowed after the 20 year expiry date.

As to second use, the first thing to understand is that use claims are method claims and should be treated as such. The Rav Bareakh crook-lock ruling by the Israel Supreme Court allows contributory infringement and inducement to infringe. However, in Srori vs. Regba, the fact that a sink could be mounted flush with the work surface was insufficient grounds to grant an injunction against the importer, since, As Adi Levit argued effectively, the sinks in question could be mounted under the work-surface, or could be mounted with the lip overlapping the work surface (over-mounted) or could be filled with earth and used as a flower-pot.  Thus, the proper infringers were the kitchen installation companies, and there was no effective bottle neck to sue in the supply chain.  Getting back to secondary uses for drugs, lets assume that using aspirin to dilute blood to prevent thrombosis is indeed novel and inventive. This does not prevent patients buying aspirin over the counter for treating aches and pains and then using it for the new patented use. Manufacturers of aspirin are not infringing the secondary use patent. Similarly, generally speaking, patents for secondary uses are not for the drug itself, but for its use in treating a particular illness. They are method claims. I agree with Dr Ron Tomer that the manufacturer is generally not the infringing party. The physician or patient might be, that the US exception against suing health care officials should apply. There are, of course, some particular dosages that are borderline cases. In such cases, the newly packaged drug is a new product. Whether or not, it is also inventive, is arguable.

Referring back to the blackboard; Ena is correct, it was not a new product, nor was its method of manufacture new. The novelty lay in the method of use, i.e. for projecting an image thereonto. The patent provided grounds for suing schools and teachers for direct infringing – both customers of the patentee and of competitors. This is a patent without teeth. If competing manufacturers note that their blackboards may also serve as a screen, is this inducement to infringe? Maybe it would be better for them to note that although the blackboards may be used as screens, this use is protected by Israel Patent Number IL XXXX, and as long as the patent is valid, is not allowed. This is very different from the crook-lock case where the imported part was designed and manufactured for combining with two common elements to provide the crook-lock, and could only be used for infringing the patent, or for a trivial use such as a paper-weight or land fill.

At the end of the day, it is the job of the patent attorney to draft patentable and enforceable claims. I note that in the US, the pendulum has recently swung away from secondary infringement. See US Supreme Court Ruling 12–786 Limelight Networks v Akamai Technologies Inc et al., June 2, 2014. I believe that often these cases result from poor claim drafting, as do Marksman disagreements. In the past, I drafted and successfully prosecuted a  patent for a kitchen sink AFTER Tsrori vs. Negba. See  US6782593B1.  I’ve also had fun drafting together with Adv. and Patent Attorney Tami Winitz a patent for a new method of using an existing heart valve, where I believe the creative claim-set provides enforceability. See US8408214B2.  Patent attorneys drafting applications try to protect their client’s inventions and stretch the law. Litigators opposing patents do the opposite. We all have our roles to play.

 


Amending a patent application under opposition

June 25, 2014

muzzle flash

This ruling by the Commissioner of Patents clarifies what types of amendments to claims may be allowed during oppositions and post grant, and in which cases the patentee has to provide justification for amendment. Unfortunately, in applying the rules, the commissioner got it wrong and allowed an amendment that causes embodiments not previously within the scope of protection to henceforth be protected.

Rafael Advanced Warfare Systems LTD opposed an attempt to amend the description of patent application no. IL 188066 titled “System and Method for Identifying Shooting”, which was filed in December 2007 by Optigo LTD and Elta Systems LTD,  transferred totally to Elta in December 2011, and published for oppositions at the end of July 2012.

On 25 October 2012 Rafael filed an opposition, submitting a statement of case in February 2013. Instead of responding, in August 2013, Elta applied to amend the application. Rafael opposed this as well, filing a further statement of case, and in January 2014, Elta filed their statement of case. Under Regulation 102, the main opposition is suspended until the allowability of the amendment is determined. The parties forwent the right to a hearing and the ruling on the amendment was given based on the written submissions.

In brief, the application claims identifying shooting from the Infra Red flash from gun muzzles.

The amendments included:

  • substituting the term locating and detecting into the claims, where the original claim related to detecting only
  • the term PDA (Photo Detector Array) was replaced with an imager comprising a non cryogenically cooled PDA
  • The term sensing was replaced with imaging
  • The term Near Infra Red NIR was replaced with Short Wave Infra Red SWIR
  • In addition, claims relating to the activity of the sensor and the information collected was amended

The marked up amended claims are reproduced below:

1. 2. A method for use in detecting and locating on of a muzzle flash event, the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere –of said at least portion of the NIR and SWIR spectrum, said sensing imaging having an integration time shorter than 10-2 s.

2. 1. A method for use in detection detecting and locating of a muzzle flash event, , the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere for said at least portion of the NIR and SWIR spectrum; and wherein said sensing imaging having an integration time shorter than a duration of the muzzle flash event; the method comprising applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.

3. The method of any one of preceding Claims 2, wherein said parallel in-pixel processing comprising analyzing the time dependent signals from each pixel independently of other pixelssensing is at least in part performed within the NIR spectrum.

4. The method of any one of preceding Claims, wherein said imager comprises at least 10,000 pixelssensing is at least in part performed within the SWIR spectrum.

24. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, said sensing PDA having an integration time shorter than 10-2 s.

25. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, the PDA having an integration time shorter than a duration of the muzzle flash event; the device includes a processing system adapted for applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.

26. The device of Claim 2526 or 27, wherein said parallel in-pixel processing comprising analyzing the time dependent signal from each pixel independently of other pixels the PDA at least partially being sensitive within the NIR spectrum.

27. The device of any one of Claims 26 24 to 2826, the PDA at least partially being sensitive within the SWIR spectrumwherein said imager comprises at least 10,000 pixels.

Following these amendments, applicant requested replacing sensing with imaging in claims 15, 16, 17, 20, 21, 22 and 23, and deleting the words sensing being  in claims 43-36 with appropriate grammatical amendments.

In claims 5-11, 18-19, 28-34, 38-42 the applicant requested adding the word wherein with appropriate grammatical amendments.

Applicant requested cancelling claims 5, 19, 30 and 44.

Claims of the parties

Elta claimed that the amendments were supported by the specification and that none of the amendments widened the scope of protection and thus fulfilled both Sections 65 and 66 of the Law.

Rafael countered that the amendments widen the claim-set, change the essence of the invention and claim elements not is the original application.

Rafael argued that “detecting and locating” is wider than merely detecting in that the invention now enables working out where the flash comes from. Therefore the amendment should not be allowed. Similarly, imaging includes sensing, but provides additional functionality and enables obtaining results not previously protected. Substituting SWIR for NIR enables using a sensor that does not work in the NIR part of the spectrum. Furthermore, the proposed amendments to claims 3, 4, 26 and 27 are substantial enough to effectively amount to new claims.

Elta responded that nothing claimed extends beyond the scope of the original specification. SInce the opposer did not provide evidence supporting his allegations, they should be thrown out under Regulation 102c, and the opposer should be considered as accepting the amendments.

The opposer considers that having to detect locate is narrower than merely detecting and should be allowed.slocating is supported on page 13 lines 17-21, page 53 lines 20-22. Similarly, “an imager comprising a non-cryogenically cooled PDA” is narrower than merely a  PDA, since it has to be an imager. Support is found on Page 10 line 6, page 7 lines 20-23 and 28-29. In general, the very sensing is wider than imaging, as imaging requires sensing, but also forming a picture. In general, adding additional stages to a process is inherently narrowing. Thus any amendments that narrow the scope of protection should be allowed.

The Ruling

This ruling was issued by the Commissioner, Asa Kling.

Opposers are not required to submit evidence where the issue revolves around an internal logic. The mere failure to submit additional evidence cannot be taken as abandoning the opposition. The proposed reading of the regulations was thus rejected.

Citing Section 29 of the Latent Law, post acceptance, the allowable amendments to claims are those allowable post-grant. i.e. amendments allowable under Sections 65 and 66.Such amendments have to be supported by specification and cannot be a widening in the scope of the protection requested. In addition, Regulation 95a allows post allowance amendments only on paying the requisite fee and stating the purpose of the amendment (so that the commissioner can ascertain that the amendment is indeed a narrowing of the scope of protection).

Citing then deputy commissioner Axelrod in IL 101537 Unipharm vs Merck, 30/4/2003 Section 21b, the applicant has to provide explanations to persuade the examiner that the amendments should be allowed. This was upheld by the Supreme Court in 11194/04 Polyvid polystyrene foam vs. Eli Givati et al. Essentially, according to the Commissioner, he has no choice but to allow amendments that correct a mistake in the claims and claim that which should have been claimed originally, if doing so does not widen the protection, but the onus is on applicant to show that this is indeed the case. The question is really whether after the amendment, the claims can catch something that would otherwise not be considered infringing.

As to locating, since detecting and locating is narrower than merely detecting, it was allowed. Similarly, a choice of a specific  type of imager is narrower than any detector and was allowed.

The Commissioner considered SWIR as relating to the range 0.7 microns to 1 microns  and NIR as relating to the range 1 micron to 3 microns. Since the range is smaller, he allowed this amendment. (I believe that this amendment is wrong as I will explain below).

As to claims 2 and 25, these also narrow the claim scope, but their intent was not stated and is not self-evident. Consequently, these amendments were rejected, as were the corresponding amendments to dependent claims 3 and 26. Claims 4 and 27 that replaced wavelengths with pixel densities were considered new claims and were rejected.

Any amendment not obviously narrowing, was not allowed, since the onus was on applicant to explain why additional or seriously amended claims should be allowed.

Adding words like ‘wherein’ and correcting grammatical errors was allowed.

In conclusion, the amendments to claims 1, 5-24, and 28-52 were allowed, as was deleting original claims 5, 19, 30 and 44.  The new clauses in claims 2 and 25 for ‘the method comprising’ and ‘the device includes’ were rejected. The amendments to claims 3, 4, 26 ans 27 were likewise rejected.

Costs were to be awarded at the end of the main opposition

COMMENTS

I am not familiar with the term SWIR. Wikipedia considers SWIR as being below 1.4 micron and NIR as being from 1-3 microns. see here.

As defined by Commissioner Kling, the SWIR range is below that of the NIR range. The amendment protects a system using a sensor of wavelengths below 1 micron, whereas prior to the amendment it would be an acceptable work-around. Clearly, this is a widening of the scope of protection. If, for example, visible light was claimed and an amendment specified green light, or part of the spectrum from red to green, this would be a claim narrowing, since the new range is totally within the older range. That is not the case, at least not according to the Commissioner’s own definition. If he sees this, I’d expect him to correct the ruling. If not, there are grounds to appeal since the Commissioner is correct legally, but wrong scientifically. For those not with me on this, try drawing Venn diagrams.

 

 

 

 


Employee’s IP – When Things Get Multinational…

June 19, 2014

academic

Smart & Biggar, a Canadian firm with a memorable name has a good article comparing and contrasting the rights of an employer in employee’s copyright and inventions. See here.  

This is an issue that comes up around the world, and which I have reported on and organized seminars on.

Dr Shlomit Yanitzk-Ravid has recently published a book on the subject, based on her PhD theses. There were also a recent Israeli court ruling and a committee decision that referred to that book.

As academics, including Shlomit, spend time on sabbatical and as visiting professors (currently she is seconded from ONO to Yale), there are territorial complications. If a paper is written by a visiting professor whilst staying at a college who supports royalty free publishing, should he/she have to publish in such a journal? What about if the college where he/she is tenured prefers publication in one of their own Law Reviews?

Companies are often multinational. It is not inconceivable that a company formed and headquartered in the US State of Delaware could develop an invention by collaboration between research groups in Israel and Europe. Apart from Employment Law and Patent Law in the different countries, perhaps being different, funding from binational govt. research funds may have strings attached. Some of the research could be done by a post-graduate student in a university. One inventor may be a tenured university professor consulting to industry and another might be an industrialist who teaches a course in the university. Research could be performed in a university of industrial lab, but what if it is performed on a computer terminal in the company whilst logged on to a university computer?

Where I get drawn into these types of issues, I may be consulting to US council of the Head Office, perhaps outside-council, and could be billed by a US law firm. If the company that perhaps owns the IP has a research lab or factory in Israel, should I be charging VAT on my fees even though I am being paid by money that is laundered, conditioned and neatly pressed by the US Law Firm?


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